Cobranding and Collaboration

A trademark is a sign with a distinctive character and constitutes a major intellectual property asset for a company.

The owner of a trademark (natural person or legal entity) benefits from an exclusive right on his trademark, which is doubly limited:

• To the country in which the trademark is registered (principle of territoriality established by article 712-1 of the Intellectual Property Code) and ;
• To the goods and/or services it designates (principle of speciality laid down by article 713-1 of the Intellectual Property Code).

It is therefore necessary to protect one’s trademark against any fraudulent use of an identical or similar sign used for goods and/or services The aim is to promote the trademark’s image and visibility among current and potential targets, in particular through the development of a collaboration strategy – such an operation allowing the partners to reach a wider audience and to attract the attention of customers with an exclusive product line combining two signs.

More and more often, companies are setting up this type of partnership in order to offer consumers products with the codes / symbolic of both trademarks.

Louis Vuitton is one of the forerunners in terms of collaborations.

Thus, and very early on, Louis Vuitton made several associations with other trandemarks and artists. Notably, the trademark partnered in 2017 with artist Jeff Koons and the Supreme trademark.

So, for example, in luxury, Gucci and Balenciaga recently created a hybrid collection, the Hacker Project, which is a partnership that reinterprets Balenciaga’s silhouettes by combining them with some pretty strong Gucci elements such as the combination of the double G and color stripe and tagged phrases like “This is not a Gucci Bag”.

More recently, the famous fashion designer Simon Jacquemus announced on his social networks (official Instagram account) his new collaboration with the sportswear trademark Nike expected for summer 2022.

Prada and Adidas have also collaborated on several occasions and return this year to combine their icons, respectively the Re-Nylon fabric and Adidas Originals Forum sneakers. The Adidas for Prada Re-Nylon collection features ready-to-wear pieces and accessories.

Trademarks know that consumers get bored and need to be surprised, so they make sure to create a surprise so that the collaboration works for both partners.

For several years now, collaborations have been developing between the great names of luxury (Louis Vuitton, Prada, etc.) and trademarks that were originally functional, more designed for sports activities (Nike, Adidas).

If the differences between these two universes exist, it remains that such a collaboration allows these trademarks to create a new dynamic: the comfortable luxury on one side and the elegant and sought-after street/sportswear on the other.

Each partner pursues the same objective: to get the word out about its trademark, increase its visibility, reach new targets, develop its clientele and thus create or strengthen a certain notoriety.

Whether it’s a matter of co-branding or collaboration between two trademarks, between two universes, we must not only think about marketing and communication operations but also think about law.

There are indeed a number of legal questions that companies must ask themselves:

• Which trademark are covered by the agreement?
• Is the notoriety of one stronger than the other?
• How will they be used?
• For how long?
• What will be the distribution channels for the products?
• On which territory?
• Don’t such agreements interfere with the exclusivity that would have been granted to third parties on all or part of the territory?
• How will the collaboration be promoted? On which media (advertising campaign on social networks, announcement of the association, organization of interviews, reciprocal obligations of partners etc.)?
• How to position the trandemarks? Is it better to refer to the collaboration as BALENCIAGA X GUCCI or the other way around?

It is also necessary to determine who owns the intellectual property rights especially on the creations resulting from the association.

Often, what is foreseen is that each party retains what makes up its identity and what results from its existing, and that all that is created and developed in common will no longer be re-exploited by one or the other party.

Sometimes the collaboration will even involve the registration of trademark(s), and in such a case, in whose name the trademark (s) will be registered and what will become of them at the end of the collaboration.

Moreover, what will happen in case of counterfeiting? Who will be entitled to bring the action against a third party and how will the parties divide any damages?

These are questions that are not necessarily naturally asked when two trademaks decide to join forces to create a story together, a story that highlights their values, their similarities and dissimilarities, when it is essential to ask them and to define the legal outline of the collaboration in business life.

The Bouchara Law firm assists you in particular in :

• Negotiation and conclusion of co-branding agreements;
• Negotiation and conclusion of collaboration agreements;
• The contractual framework of partnerships (ownership of rights, promotion, advertising campaigns, terms of distribution on the web, social networks);
• The protection of your intellectual property rights and more particularly of your creations;
• The prior art search prior to any trademark application;
• The writing of the good(s) and/or service(s) (organized according to the classes) of your brands;
• Filing your trademarks in France (INPI), at the European Union level (EUIPO) and abroad (WIPO or national filings);
• The follow-up of the registration procedure of your trademarks before the Intellectual Property Offices;
• The defense of your intellectual property assets before the Office and the Courts(opposition, nullity action, seizure of infringement, action for infringement, action for unfair competition, etc.).